JUDGMENT OF THE GENERAL COURT (Fourth Chamber)
27 September 2018 (*)
(EU trade mark — Opposition proceedings — Application for EU word mark SEVENFRIDAY — Earlier EU word mark SEVEN — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001))
In Case T‑448/17,
Sevenfriday AG, established in Zurich (Switzerland), represented by M. Mostardini, F. Mellucci, S. Pallavicini and G. Bellomo, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by J. Crespo Carrillo and D. Walicka, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, and intervener before the General Court, being
Seven SpA, established in Leinì (Italy), represented by L. Trevisan, lawyer,
ACTION brought against the decision of the Second Board of Appeal of EUIPO of 2 May 2017 (Case R 2291/2016-2), concerning opposition proceedings between Seven and Sevenfriday,
THE GENERAL COURT (Fourth Chamber)
composed of H. Kanninen, President, J. Schwarcz (Rapporteur) and C. Iliopoulos, Judges,
Registrar: X. Lopez Bancalari, Administrator,
having regard to the application lodged at the Court Registry on 18 July 2017,
having regard to the response of EUIPO lodged at the Court Registry on 18 September 2017,
having regard to the response of the intervener lodged at the Court Registry on 12 October 2017,
having regard to the decision of 23 March 2018 joining Cases T‑448/17 and T‑449/17 for the purposes of the oral part of the procedure,
further to the hearing on 20 April 2018,
gives the following
Judgment
Background to the dispute
1 On 27 May 2014, the applicant, Sevenfriday AG, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).
2 The mark for which registration was sought is the word sign SEVENFRIDAY.
3 The goods in respect of which registration was sought are in Classes 18 and 25 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for Class 18 — the only class which is relevant to the present dispute — to the following description: ‘Handbags; evening handbags; travelling handbags; ladies handbags; purses’.
4 The EU trade mark application was published in the European Union Trade Marks Bulletin No 2014/106 of 11 June 2014.
5 On 1 September 2014, the intervener, Seven SpA, filed an opposition, pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001), to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.
6 The opposition was based on the earlier EU word mark SEVEN, applied for on 2 December 2009 and registered on 2 June 2010 under number 8728651 for the goods in, inter alia, Class 18 and corresponding to the following description: ‘Goods made of leather and imitations of leather not included in other classes; backpacks, rucksacks, school bags, sling bags for carrying infants, bags, shopping bags, travelling bags and holdalls, bags and holdalls for sport; handbags; bags for campers; beach bags; bags for climbers; satchels; portfolio bags; notecases; pouches (bags); key holders; bum-bags; valises; umbrellas; trunks; walking sticks; overnight bags’.
7 The grounds relied on in support of the opposition were those set out in Article 8(1)(b) and 8(4) of Regulation No 207/2009 (now Article 8(1)(b) and Article 8(4) of Regulation 2017/1001).
8 On 8 January 2016, the mark applied for was divided, as a result of which the original application was restricted to the goods in Class 18.
9 On 7 October 2016, the Opposition Division upheld the opposition in respect of all the goods at issue on the ground that there was a likelihood of confusion for the purposes of Article 8(1)(b) of Regulation No 207/2009 with the mark Seven.
10 On 9 December 2016, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 60 of Regulation No 207/2009 (now Articles 66 to 68 of Regulation 2017/1001), against the decision of the Opposition Division.
11 By decision of 2 May 2017 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the applicant’s appeal. In particular, the Board of Appeal found that the relevant public was the general public of the European Union. It then stated that the goods in question were identical. With regard to the comparison of the signs, the Board of Appeal found that the words ‘seven’ and ‘friday’ formed part of the basic English language and could therefore be understood by all citizens of the Union. Consequently, the Board of Appeal assessed the distinctive character of those two words and found that they possessed an average degree of inherent distinctiveness as regards the goods in question, since they had no clear link with those goods. Visually, the Board of Appeal found that the common word element ‘seven’, placed at the beginning of the trade mark applied for, created an average degree of visual similarity with the earlier sign, which could not be obscured by the — admittedly not insignificant — presence of the term ‘friday’ in the sign applied for. Phonetically, the Board of Appeal found there to be some similarity on account of the common word element, which is moreover placed at the beginning of the sign. In the Board of Appeal’s view, the similarity created by those elements is not dispelled by the presence, in the mark applied for, of the syllables ‘fri’ and ‘day’. It took the view that, conceptually, the mark applied for, which contains a grammatical error and does not therefore convey any clearly defined meaning, has no meaning other than that of each term of which that mark consists, with the overall impression conveyed by that mark being the mere sum of its parts and not a new and original meaning. The presence of the word ‘seven’ in each of the two signs therefore entails, in the Board of Appeal’s view, a degree of conceptual similarity. It therefore found there to be an average degree of visual and phonetic similarity and some conceptual similarity, and took the view that the signs at issue, taken as a whole, exhibited a low degree of similarity. In the context of the global assessment of the likelihood of confusion, the Board of Appeal found that that low degree of similarity between the signs was offset in the present case by the identity of the goods. On the basis of those observations, the Board of Appeal concluded that there was a likelihood of confusion between the marks at issue on the part of the relevant public and, therefore, dismissed the appeal in its entirety.
Forms of order sought
12 The applicant claims that the Court should annul the contested decision and allow registration of the mark applied for.
13 EUIPO contends that the Court should:
– dismiss the application;
– order the applicant to pay the costs.
14 The intervener claims that the Court should:
– dismiss the application;
– order the applicant to pay the costs.
Law
15 In support of its appeal, the applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.
16 First, it claims that, contrary to the Board of Appeal’s findings, the earlier mark SEVEN is only weakly distinctive. According to the applicant, that mark consists of a number. Moreover, the applicant submits that the Board of Appeal erred in its analysis of the similarity of the marks at issue and that the differences between them mean that any likelihood of confusion or association can be ruled out.
17 EUIPO disputes the applicant’s arguments and contends that the Second Board of Appeal correctly held that there was a likelihood of confusion.
18 The intervener also disputes the applicant’s arguments. It submits, in essence, that the earlier mark cannot be regarded as being of inherently low distinctiveness in relation to the goods concerned and that the comparison of the signs at issue leads to the conclusion that there is a certain similarity between the marks, entailing a likelihood of confusion in the mind of the relevant public.
19 In that regard, Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
20 According to the case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to that case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
21 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).
22 It follows that, where the signs at issue are different, a necessary condition for the existence of a likelihood of confusion is not met; it must therefore be ruled out, regardless of the degree of similarity between the goods or services and the degree of distinctiveness of the earlier mark. Even if the goods or services are identical or highly similar and the earlier mark is highly distinctive, those circumstances do not make up for the fact that the essential requirement relating to the similarity of the signs is not met. On the other hand, where the signs are similar, even to a low degree, the existence of a likelihood of confusion cannot be a priori ruled out, since a low degree of similarity of the signs is likely to be offset by the identity or strong similarity of the goods or services and by the high distinctive character of the earlier mark (judgment of 21 February 2018, Laboratoire Nuxe v EUIPO — Camille and Tariot (NYouX), T‑179/17, not published, EU:T:2018:89, paragraphs 27 and 28).
The relevant public and the goods concerned
23 The findings of the Board of Appeal, that the relevant public consists of the general public of the European Union and that the goods in Class 18 covered by the marks at issue are identical, are not disputed by the parties.
The comparison of the signs
24 The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the marks at issue, be based on the overall impression given by those marks, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In that regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgments of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited, and of 16 December 2015, Rotkäppchen-Mumm Sektkellereien v OHIM — Ruiz Moncayo (RED RIDING HOOD), T‑128/15, not published, EU:T:2015:977, paragraph 23).
25 Two marks are similar where, from the perspective of the relevant public, they are at least partially identical as regards one or more relevant aspects. As is apparent from the case-law, the visual, phonetic and conceptual aspects are relevant in that regard (see judgment of 23 October 2002, Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 30 and the case-law cited).
26 In the present case, the signs to be compared are, on the one hand, the earlier word mark SEVEN and, on the other, the word mark SEVENFRIDAY.
The distinctive and dominant elements
27 The applicant submits, in essence, that the mark applied for is dominated by the element ‘friday’, which has more letters than the element ‘seven’ and, moreover, is more distinctive. It should therefore be held to offset any possible similarity derived from the presence of the word ‘seven’ in the two signs at issue.
28 In that regard, it should be noted that the existence of a similarity between two marks does not presuppose that their common component forms the dominant element within the overall impression created by the mark applied for. According to established case-law, in order to assess the similarity of two marks, it is necessary to consider each of the marks as a whole, although that does not rule out the possibility that the overall impression created in the mind of the relevant public by a complex trade mark may, in certain circumstances, be dominated by one or more of its components. It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element. It is sufficient in that regard for the common component not to be negligible (see judgment of 2 September 2010, Calvin Klein Trademark Trust v OHIM, C‑254/09 P, EU:C:2010:488, paragraph 56 and the case-law cited).
29 Accordingly, the mere fact that one element of a composite mark formed of two elements plays a more important role than the other does not automatically mean that the comparison between the marks at issue can be limited to considering the former element (judgments of 10 October 2012, Bimbo v OHIM– Panrico (BIMBO DOUGHNUTS), T‑569/10, not published, EU:T:2012:535, paragraph 78, and of 26 May 2016, Aldi Einkauf v EUIPO — Dyado Liben (Casale Fresco), T‑254/15, not published, EU:T:2016:319, paragraph 35).
30 In the present case, it may be accepted that the element ‘friday’ occupies a not insignificant place in the overall impression produced by the mark applied for because it is composed of six letters, whereas the element ‘seven’ is composed of only five. However, it cannot be held, as the applicant maintains, that the element ‘friday’ is in a dominant position, whereas the element ‘seven’ plays only a marginal part in the overall impression created by that mark. According to settled case-law, the consumer generally pays greater attention to the beginning of a mark than to the end and the word placed at the beginning of the sign is likely to have a greater impact than the rest of the sign (see judgment of 15 July 2015, The Smiley Company v OHIM — The Swatch Group Management Services (HAPPY TIME), T‑352/14, not published, EU:T:2015:491, paragraph 36 and the case-law cited). The word ‘seven’ is at the beginning of the mark applied for. That word therefore plays a significant role in the overall impression produced by the mark applied for and cannot, therefore, be neglected. It follows that the two elements ‘seven’ and ‘friday’ have an independent distinctive role within the mark applied for, none of them being dominant in the overall impression created by the mark. Both should be taken into consideration in the comparison of the marks at issue. However, it follows from the case-law cited above that it is precisely the element ‘seven’, placed at the beginning of the mark applied for, that is the main focus of attention of the average consumer.
31 It follows that the applicant’s argument relating to the dominant position of the element ‘friday’ and the declining importance of the element ‘seven’ in the comparison of the signs at issue cannot be upheld.
The visual similarity
32 The applicant submits that no visual similarity exists between the signs at issue, since one contains 11 letters and the other only 5.
33 In that regard, it must be noted, as the Board of Appeal has done in paragraph 30 of the contested decision, that the fact that the mark applied for contains or reproduces in its entirety the earlier mark rather supports the conclusion that those two marks must be regarded as similar. In particular, the fact that a sign consists exclusively of the earlier mark, to which another word has been added, is an indication that the two trade marks are similar (see judgment of 28 September 2011, Nike International v OHIM — Deichmann (VICTORY RED), T‑356/10, not published, EU:T:2011:543, paragraph 29 and the case-law cited).
34 In the present case, it must be held that the signs at issue have in common the word element ‘seven’ but differ in the second element of the mark applied for, namely ‘friday’ and, therefore, in length.
35 Moreover, as noted in paragraph 30 above, it is settled case-law that the consumer generally pays greater attention to the beginning of a word sign than to the end. Therefore, the common element ‘seven’, appearing at the beginning of the mark applied for, has a greater impact in the overall visual impression produced by the latter.
36 The Board of Appeal therefore correctly held, in paragraph 38 of the contested decision, that there was an average degree of visual similarity between the signs at issue.
The phonetic similarity
37 The applicant submits in essence that, from a phonetic perspective, the difference in the number of letters and syllables between the two signs at issue entails a difference which is sufficient to rule out any similarity between them.
38 In that regard, it should be noted that, as with the visual aspect, the pronunciation of the two signs at issue is identical in relation to the common element ‘seven’, but that, as the applicant claims, the marks at issue are of different lengths and have different endings, because of an additional word element in the mark applied for, namely ‘friday’.
39 As was correctly pointed out by the Board of Appeal in paragraph 32 of the contested decision, the fact that the number of syllables is different is not sufficient to rule out a phonetic similarity between the signs (see judgment of 19 May 2011, PJ Hungary v OHIM Pepekillo (PEPEQUILLO), T‑580/08, EU:T:2011:227, paragraph 79 and the case-law cited).
40 On the other hand, the fact that the sole word element of one of the two conflicting signs is always pronounced in the same way as one of the word elements of the other sign in question, which occupies an independent distinctive role within it, leads to the conclusion that those two marks, taken as a whole, are phonetically similar (judgement of 29 January 2013, Müller v OHIM — Loncar (Sunless), T‑662/11, not published, EU:T:2013:43, paragraph 72).
41 In the present case, the word ‘seven’ appears in full in the two signs at issue and is pronounced identically. In addition, the attention of the relevant public is usually directed in particular to the beginning of a word (judgment of 28 November 2013, Lorenz Shoe Group v OHIM — Fuzhou Fuan Leather Plastics Clothing Making (Ganeder), T‑374/09, not published, EU:T:2013:616, paragraph 45). Therefore, in view of its position at the beginning of the mark applied for, the element ‘seven’ will be the first that the consumer will hear and, accordingly, that which he will remember most easily (see, to that effect and by analogy, judgment of 28 September 2011, VICTORY RED, T‑356/10, not published, EU:T:2011:543, paragraph 41 and the case-law cited).
42 It follows that the Board of Appeal’s conclusion that the signs have an average degree of phonetic similarity must be upheld.
The conceptual similarity
43 As regards the conceptual similarity, the applicant submits that the mark applied for is not just the juxtaposition of the signs SEVEN and FRIDAY which retain their independent meaning, but forms a whole which conveys a new concept, according to which each of the seven days of the week is a Friday. It submits that that concept will be understood by the relevant public as its components belong to basic English vocabulary and because the sign is devoid of any grammatical errors. It adds that, even if the mark applied for were to be considered as including a grammatical error, the relevant public would nevertheless be able to understand the semantic content, since it remains orally identical to the mark when correctly spelt. In the alternative, it argues that, if it were to be concluded that the relevant public was not able to understand that concept, with the result that the sign SEVENFRIDAY should be regarded as devoid of any clear and specific semantic content, it should be considered to be conceptually different from the earlier sign SEVEN.
44 In that regard, it should be noted that the obligation to carry out an analysis of the overall impression conveyed by the marks in question cannot, however, entail that an examination of each of the individual features of the presentation of those marks should not in turn first be carried out. It may be useful, during the overall assessment, to examine each of the constituent elements of the trade marks concerned (see, by analogy, in the context of the application of Article 7(1)(b) of Regulation No 207/2009 (now Article 7(1)(b) of Regulation 2017/1001), judgment of 7 October 2015, The Smiley Company v OHIM (Shape of a smiley with heart-shaped eyes), T‑656/13, not published, EU:T:2015:758, paragraph 27 and the case-law cited).
45 With regard to the earlier mark, it should be noted that the word ‘seven’ is part of elementary English vocabulary, and that its meaning is therefore understood by the average consumer in the European Union with only basic knowledge of English (judgment of 6 October 2011, Seven v OHIM — Seven for all mankind (SEVEN FOR ALL MANKIND), T‑176/10, not published, EU:T:2011:577, paragraph 50). The concept conveyed by a word representing a number is the number it identifies (judgments of 16 September 2009, Zero Industry v OHIM — zero Germany (zerorh+), T‑400/06, not published, EU:T:2009:331, paragraph 63, and of 8 May 2012, Tsakiris-Mallas v OHIM — Seven (7 Seven Fashion Shoes), T‑244/10, not published, EU:T:2012:219, paragraph 57). The word element ‘seven’ therefore refers to a single concept, namely number 7, which will be understood by the relevant public.
46 Regarding the meaning of the mark applied for, the word ‘sevenfriday’, considered as a whole, does not convey any meaning which may be grasped immediately and without further explanation. It was established in paragraph 45 above that the term ‘seven’ will be understood by the relevant public as referring to number 7. As noted by the Board of Appeal in paragraph 24 of the contested decision, the word element ‘Friday’ also forms part of basic English vocabulary and will therefore be understood by the relevant public as referring to the fifth day of the week, the day before the weekend. However, although the applicant believes that the mark applied for refers to ‘seven Fridays’, it is clear that it contains grammatical errors, consisting in the absence of a space between the two elements and the lack of the letter ‘s’ denoting the plural at the end of the mark applied for. Those errors create a discontinuity between the words ‘seven’ and ‘friday’ and make it unlikely that consumers would understand the concept on which the applicant relies. In addition, as regards the applicant’s argument that it will always be possible for the relevant public to understand a misspelt word which is orally identical to the correct word, it should be noted that in the present case ‘sevenfriday’ is not orally identical to the grammatically correct expression ‘seven Fridays’. In contrast to the mark applied for, the latter expression is pronounced in two stages, being composed of two separate words, and the last letter of the element ‘Fridays’ is pronounced and audible.
47 The conclusion reached by the Board of Appeal in paragraph 34 of the contested decision that, conceptually, the mark applied for does not create a clearly perceptible new meaning and therefore consists only in the bringing together of two words, namely ‘seven’ and ‘Friday’, which retain their independent meaning in the mind of the relevant public, must therefore be upheld.
48 In that regard, it should also be noted that, although the consumer normally perceives a mark as a whole and does not engage in an analysis of its various details, the fact remains that, when perceiving a word element, the consumer will break it down into word elements which, for him, suggest a specific meaning or resemble words known to him (see judgments of 16 September 2009, Hipp & Co v OHIM — Laboratorios Ordesa (Bebimil), T‑221/06, not published, EU:T:2009:330, paragraph 55 and the case-law cited, and of 16 September 2009, zerorh +, T‑400/06, not published, EU:T:2009:331, paragraph 64 and the case-law cited). The consumer will therefore associate the sign SEVENFRIDAY with the independent meaning of the elements ‘seven’ and ‘Friday’ which he is able to understand clearly.
49 It follows that, from a conceptual point of view, the two signs at issue have in common the semantic content of the element ‘seven’, which refers to the number 7. That similarity cannot be ruled out by the mere presence, in the sign SEVENFRIDAY, of the word ‘Friday’, which conveys an independent meaning and does not change that of the word ‘seven’. Consequently, the contested decision can only be endorsed in so far as it acknowledged, in paragraph 35 thereof, some conceptual similarity between the signs at issue.
50 Moreover, the case-law cited by the applicant, according to which an element of a composite sign does not retain an independent distinctive role if, together with the other element or elements of the sign, that element forms a unit having a different meaning as compared with the meaning of those components taken separately (see judgment of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 25 and the case-law cited), is not applicable in the present case, precisely because the Board of Appeal established to the requisite legal standard that the mark applied for did not constitute a unit having a different meaning as compared with that of its constituent elements, taken separately.
The global assessment of the similarity of the signs
51 It follows from the foregoing considerations that the Board of Appeal did carry out an overall comparison of the marks at issue, each considered as a whole. The Board of Appeal did not fail, in the course of its assessment, to note the differences between the marks at issue and correctly took account of the element ‘friday’.
52 The contested decision must be upheld in that it found there was an average degree of visual and phonetic similarity and some conceptual similarity. It follows that the Board of Appeal erred in its assessment by classifying, in paragraph 41 of the contested decision, the overall similarity between the marks at issue as low. It should have classified it as average.
The existence of a likelihood of confusion
53 According to settled case-law, a global assessment of the likelihood of confusion implies some interdependence between the factors taken into account, and in particular between the similarity of the trade marks and the similarity of the goods or services concerned. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 9 July 2003, GIORGIO BEVERLY HILLS, T‑162/01, EU:T:2003:199, paragraph 32; see also judgments of 14 December 2006, Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and Others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74 and the case-law cited, and of 24 June 2015, Infocit v OHIM — DIN (DINKOOL), T‑621/14, not published, EU:T:2015:427, paragraph 58 and the case-law cited).
54 As noted in paragraph 23 above, it is not disputed that the goods covered by the marks at issue are identical.
55 It has also been established in paragraph 52 above that the marks at issue were globally similar to an average degree.
56 Consequently, there is a likelihood of confusion between the two marks at issue on the part of the relevant public.
57 That conclusion is not called into question by the applicant’s argument based on the allegedly weak distinctiveness of the earlier mark.
58 First, the applicant submits that the earlier mark is only weakly distinctive and should accordingly receive little protection. It takes the view, in essence, that there is a specific category of signs consisting of colours, letters and numbers, which are only weakly distinctive and, consequently, are more likely to be refused registration under Article 7(1)(b) of Regulation No 207/2009, and enjoy less protection in the context of a comparison of the signs under Article 8(1)(b) of that regulation.
59 First, it should be recalled that the fact that a mark has been registered means that that mark has a minimum of inherent distinctiveness, since Article 7(1)(b) of Regulation No 207/2009 precludes registration of a mark which is devoid of distinctive character (see judgment of 26 May 2016, Casale Fresco, T‑254/15, not published, EU:T:2016:319, paragraph 27 and the case-law cited).
60 Moreover, it should be noted that the argument, based on the requirement of the availability of a sign relied on in the application, cannot be applied in the context of opposition proceedings, as is apparent from the case-law relied on by the applicant itself (see, to that effect, in the context of the application of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1), judgment of 10 April 2008, adidas and adidas Benelux, C‑102/07, EU:C:2008:217, paragraph 30; see also, by analogy, judgments of 13 April 2011, Bodegas y Viñedos Puerta de Labastida v OHIM — Unión de Cosecheros de Labastida (PUERTA DE LABASTIDA), T‑345/09, not published, EU:T:2011:173, paragraph 65, and of 14 June 2016, Staatliche Porzellan-Manufaktur Meissen v EUIPO — Meissen Keramik (MEISSEN), T‑789/14, not published, EU:T:2016:349, paragraph 90).
61 Secondly, it is clear from the wording of Article 4 of Regulation No 207/2009 that numbers may be registered as EU trade marks. However, any sign must, in order to be registered, meet the requirements laid down by Article 7 of Regulation No 207/2009, which precludes registration of signs not capable of fulfilling the function of indicating to the consumer the commercial origin of the goods and services covered by the application for registration. Accordingly, a number may therefore be registered as an EU trademark provided that it is distinctive in relation to the goods and services referred to in the application for registration and does not constitute a mere description of them (judgment of 22 May 2012, Sport Eybl & Sports Experts v OHIM — Seven (SEVEN SUMMITS), T‑179/11, not published, EU:T:2012:254, paragraph 54).
62 Thus, in order to assess the inherent distinctiveness of the word ‘seven’, it must be analysed in relation to the goods in question, in order to assess its ability to contribute to their identification as originating from a particular undertaking, and thus to distinguish them from those of other undertakings (see, to that effect, judgments of 26 July 2017, Continental Reifen Deutschland v Compagnie générale des établissements Michelin, C‑84/16 P, not published, EU:C:2017:596, paragraph 73, and of 22 May 2012, SEVEN SUMMITS, T‑179/11, not published, EU:T:2012:254, paragraph 55).
63 The Court has already held that although the number chosen, whether it is presented in full or digital form, does not designate the quantity, weight, serial number or other specific characteristics of the goods or services, it cannot automatically be concluded that the mark in question is devoid of distinctive character or has a very weak distinctive character (judgment of 22 May 2012, SEVEN SUMMITS, T‑179/11, not published, EU:T:2012:254, paragraph 56).
64 The Court has also held that, having no link with the goods at issue, and not being commonly used in the sector concerned, the word ‘seven’ must be regarded as having an average degree of inherent distinctiveness with regard to the goods in class 18 and corresponding to goods identical or highly similar to those covered by the earlier mark, which were then held to be identical to the goods covered by the mark applied for, falling within that class in the present case (judgments of 6 October 2011, SEVEN FOR ALL MANKIND, T‑176/10, not published, EU:T:2011:577, paragraphs 6 and 37, and of 22 May 2012, SEVEN SUMMITS, T‑179/11, not published, EU:T:2012:254, paragraphs 6 and 57).
65 In the present case, the applicant has not proved that the word ‘seven’ had a particular meaning in relation to the goods at issue, had a link with them or was commonly used in the sector concerned.
66 Examples of signs containing the element ‘seven’ provided by the applicant, which it alleges are now used in the sector concerned, do not contain any details regarding the registration and their actual use on the market, as a result of which they fail to prove the common use of the word ‘seven’ in the sector in question. It must therefore be held, as the Board of Appeal did, that the word ‘seven’ has an average degree of distinctiveness in relation to the goods concerned.
67 As regards the assessment of the distinctive character of the word ‘seven’, the applicant also relies on an earlier decision in which EUIPO found the mark concerned to have a low inherent distinctiveness. In that regard, it should be noted that EUIPO is under a duty to exercise its powers in accordance with the general principles of EU law. Although, in the light of the principles of equal treatment and of sound administration, EUIPO must take into account the decisions already taken in respect of similar applications and consider with especial care whether it should follow that precedent, the way in which those principles are applied must be consistent with respect for legality (see, to that effect, judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 73 to 75). It was held in paragraph 66 above that the word ‘seven’ must be regarded as having an average degree of distinctiveness in relation to the goods concerned.
68 The argument that the earlier mark would necessarily have a weak distinctive character, because it consists of a number, must therefore be dismissed and the contested decision confirmed inasmuch as it was held therein that there was an average degree of distinctiveness of the earlier mark in relation to the goods concerned.
69 Moreover, and in any event, any finding of a weak distinctive character for the earlier trade mark does not preclude a finding, in the present case, of the existence of a likelihood of confusion.
70 Although the distinctive character of the earlier mark must be taken into account in assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Consequently, even in a case involving an earlier mark with a weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (see judgments of 22 May 2012, SEVEN SUMMITS, T‑179/11, not published, EU:T:2012:254, paragraph 52 and the case-law cited, and of 5 October 2012, Lancôme v OHIM — Focus Magazin Verlag (COLOR FOCUS), T‑204/10, not published, EU:T:2012:523, paragraph 54 and the case-law cited).
71 In the present case, it has been held that the conflicting signs had an average degree of similarity and that the goods concerned were identical. The supposedly weak distinctive character of the earlier mark, even if proved, is therefore not sufficient, in any event, to rule out any likelihood of confusion.
72 It follows from all of the foregoing considerations that the Board of Appeal correctly held that there was a likelihood of confusion between the marks at issue on the part of the relevant public, the assessment of the distinctive character of the earlier mark in no way calling that finding into question.
73 It follows that the single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009, must be rejected, as a result of which the action must be dismissed.
Costs
74 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
75 Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.
On those grounds,
THE GENERAL COURT (Fourth Chamber)
hereby:
1. Dismisses the action;
2. Orders Sevenfriday AG to pay the costs.
Kanninen | Schwarcz | Iliopoulos |
Delivered in open court in Luxembourg on 27 September 2018.